WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Epson Europe BV v. Armitage Case No. D2009-0995 1. The Parties
The Complainant is Epson Europe BV of Amsterdam, Netherlands, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Armitage of Newcastle, United Kingdom. 2. The Domain Names and Registrar
The disputed domain names and are registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2009. On July 24, 2009, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain names. On July 29, 2009, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 24, 2009.
The Center appointed Richard Hill as the sole panelist in this matter on August 24, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a well-known global corporation, providing products and services around the world.
The Complainant owns numerous registered trademarks for the name EPSON around the world.
The Complainant's mark EPSON is well-known.
The disputed domain names and were registered on April 8, 2006. 5. Parties' Contentions A. Complainant
According to the Complainant, it is a global corporation and one of the world's largest manufacturers of inkjet, dot matrix and laser printers, scanners, desktop computers, business, multimedia and home theatre projectors, large home theatre televisions, robots and industrial automation equipment, point of sale docket printers and cash registers, laptops, integrated circuits, LCD components and other associated electronic components. It invests considerable sums every year on advertising and marketing its brands resulting in high level brand awareness on the part of consumers worldwide, including in the United Kingdom (“UK”), where the Respondent is based.
The Complainant states that it owns numerous registered marks around the world for the name EPSON. The disputed domain names are clearly confusingly similar to that mark, in that they differ from the mark only by one character, and/or by adding generic terms directly related to the Complainant's products (“ink”).
According to the Complainant, the Respondent is not commonly known by the disputed domain names and he is not using the disputed domain names for a bona fide offering of goods and services.
The Complainant contends that given the global fame of its marks (as outlined above) there is no conceivable use to which the disputed domain names could be put now, or in the future, that would not infringe the Complainant's marks given the similarity of the disputed domain names to said marks.
The Complainant alleges that the Respondent has registered and is using at least one of the disputed domain names to intentionally attempt to attract Internet users to the Respondent's web site by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site or location. Indeed, one of the disputed domain names resolves to a “parking page” that states that the web site is “under construction”. Given the incorporation of the Complainant's widely known and distinctive trade mark or a typo thereof in the disputed domain names, the Complainant states that it is reasonable for the Panel to infer on balance of probabilities that any use to which they are put will confuse Internet users. Users who come across the disputed domain names online, whether by typing them into their browser, reaching them via a search engine or by any other means will most probably be seeking and/or expecting a web site operated by the Complainant rather than the Respondent. Furthermore, the disputed domain names are extremely likely to confuse Internet users who are specifically trying to find the Complainant or the Complainant's products online.
Further, the Complainant argues that, in accordance with precedents under the Policy, even passive holding of the disputed domain names would constitute, under the particular circumstances of this case, bad faith use in the sense of the Policy. Indeed, it is not possible to conceive of any plausible or credible actual or contemplated good faith use of the disputed domain names by the Respondent. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
It is clear that the disputed domain names are confusingly similar (in the sense of the Policy) to the Complainant's mark, because one name is identical to the mark except for the addition of a geographic identifier (“uk”) and the other is a simple misspelling, combined with the work “ink”, which clearly describes many of the Complaint's well-known products. See, Canon Kabushiki Kaisha v. Price-less Inkjet Cartridge Company,WIPO Case No. D2000-0878.
The Panel holds that the Complainant has satisfied this first element of the Policy. B. Rights or Legitimate Interests
As the Complainant correctly points out, the Respondent is not commonly known by the disputed domain names, and it is difficult to conceive in these circumstances of any use by the Respondent of the disputed domain names that would not be illegitimate, as further discussed below.
The Panel holds that the Complainant has satisfied its burden of proof under this element of the Policy. C. Registered and Used in Bad Faith
One of the disputed domain names is being used by the Respondent to point to a “parking page”. This constitutes active use of the disputed domain name. As the Complainant correctly points out, it is difficult to conceive in these circumstances of any content that could appear on that web site that would not be an illegitimate violation of paragraph 4(b)(iv) of the Policy. Thus the Panel finds that the Respondent registered and is using this domain name in bad faith.
We now turn to the domain name that is being passively held by the Respondent. The Complainant aptly cites Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. This Panel, as did the Telstra Panel, must determine whether, in the circumstances of this particular case, the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith. It concludes that it does. The particular circumstances of this case which lead to this conclusion are:
(i) the Complainant's trademark has a strong reputation and is widely known,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) it is difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be an illegitimate, violation of paragraph 4(b)(iv) of the Policy.
In light of these particular circumstances, this Panel concludes that the Respondent's passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the second domain name is being used in bad faith (in the sense of the Policy) by the Respondent. And, for the same reasons given above for the other domain name, the Panel finds that the second domain name was also registered in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names and be transferred to the Complainant.
Richard Hill
Sole Panelist
Dated: August 28, 2009
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